DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submissions filed on March 16, 2026 and July 15, 2026 have been entered.
Claim Status
2. Claims 1-11 are pending and under examination to the extent of the elected species of SEQ ID NO:3, SEQ ID NO:9, and geranylgeranyl diphosphate (GGPP).
Claims 12-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 20, 2024.
Response to Arguments – Claim Objections
3. Applicant’s amendments filed March 16, 2026 and July 15, 2026 have necessitated new grounds of objection.
Claim Objections
4. Claims 1-11 are objected to because of the following:
In claim 1, the recitation of “an amino acid sequence” in ln. 4 and in ln. 5 implies the recited enzymes may comprise only a fragment of the recited SEQ ID NOs instead of the entire sequence. An enzyme comprising only a fragment of SEQ ID NO:1, SEQ ID NO:2, or SEQ ID NO:9 would require further analysis under 35 U.S.C. 112(a) to confirm the claims comply with the written description and enablement requirements of the statute. It is the Examiner’s interpretation that Applicant intends to recite the entirety of SEQ ID NO:1, SEQ ID NO:2, and SEQ ID NO:9. It is recommended Applicant amend all recitations of “an amino acid sequence” in claim 1 to “the amino acid sequence”, if Applicant intends to recite the entirety of SEQ ID NOs:1-2 and 9.
Applicant is advised that should claim 3 be found allowable, claim 8 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. Claim 8 is identical to claim 3. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 6, ln. 5 comprises a typographical error; “promotor” should be amended to “promoter”.
Claim 6, ln. 7 comprises a typographical error; “RUBISCO-SSU light-inducible promoter (SSU)” should be amended to “RUBISCO-SSU light-inducible (SSU) promoter”.
Dependent claims are included.
Appropriate correction is required.
Response to Arguments – Claim Rejections - 35 USC § 112(b)
5. Applicant’s amendments filed March 16, 2026 and July 15, 2026 have necessitated new rejections under 35 U.S.C. 112(b).
Claim Rejections - 35 USC § 112(b)
6. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
7. Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The metes and bounds of claim 1 are indefinite because SEQ ID NO:2 comprises a nucleic acid sequence. It is unclear how any enzyme can comprise 95% sequence identity to a nucleic acid sequence because enzymes are composed of amino acid sequences.
Dependent claims are included. Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)
8. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
9. Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Applicant defines “heterologous” nucleic acids as those which have been manipulated someway (p. 45, ln. 30 – p. 46, ln. 14). Such a recitation is broad and encompasses any nucleic acid sequence non-native to and/or introduced to a cell as well as modified native sequences. The expression system of claim 1 comprises expression cassettes that comprise at least one heterologous promoter. Therefore, the expression cassettes of claim 1, and the expression systems comprising said cassettes are heterologous to the host cell of claim 1. Thus claim 7 is simply reciting limitations already present in claim 1.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Response to Arguments – Claim Rejections - 35 USC § 101
8. Applicant’s arguments and amendments filed March 16, 2026 and July 15, 2026 have overcome the rejections of record.
Response to Arguments – Claim Rejections - 35 USC § 112(a)
9. Applicant’s arguments and amendments filed March 16, 2026 and July 15, 2026 have overcome the rejections of record.
Conclusion
10. No claim is allowed. The closest prior art, Douchin et al. (US-10982249-B2, published 04/20/2021 (previously cited)), teaches a recombinant host cell comprising: a gene encoding a polypeptide capable of synthesizing GGPP from farnesyl diphosphate and isopentenyl diphosphate; a gene encoding a polypeptide capable of synthesizing ent-CPP from GGPP; a gene encoding an polypeptide capable of synthesizing ent-kaurene from ent-CPP; a gene encoding a polypeptide capable of synthesizing ent-kaurenoic acid from ent-kaurene; a gene encoding a polypeptide capable of reducing cytochrome P450 complex; and/or a gene encoding a polypeptide capable of synthesizing steviol from ent-kaurenoic acid (paragraph 9). Douchin does not teach SEQ ID NO:2 or SEQ ID NO:9.
Examiner’s Contact Information
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEQUANTARIUS J SPEED whose telephone number is (703)756-4779. The examiner can normally be reached M-F; 9AM-5PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached on (571)-270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEQUANTARIUS JAVON SPEED/Junior Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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